The Complainant is Carvana, LLC, United States of America (“United States” or “U.S.”), represented by Bryan Cave Leighton Paisner, United States.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama. 2. The Domain Name and Registrar
The Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2020. On June 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 13, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 16, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 16, 2020. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2020. The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on August 11, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant states it operates the leading e-commerce platform for buying and selling used cars. It states that it promotes and renders an online automobile dealership and automobile financing services throughout the United States, under the brand CARVANA and using the primary website “www.carvana.com”. The Complainant states its business has grown rapidly since it was launched in January 2013, and that in 2019 alone it sold more than 175,000 vehicles to retail customers. The Complainant states its website “www.carvana.com” has an average of more than 5 million unique visitors each month. The Complainant’s evidence is that it owns the following trademarks: 1. CARVANA 3. CARVANA 4. These are collectively referred to as the Carvana Mark. The Complainant states it expends significant resources and effort in promoting, marketing, advertising, and building consumer recognition and goodwill in its branded goods and services under its Carvana Mark. The Respondent registered the Disputed Domain Name The Complainant’s evidence is that the Disputed Domain Name is being used by the Respondent to automatically divert Internet traffic from the Complainant’s website to third-party websites, including those belonging to the Complainant’s competitors. 5. Parties’ Contentions A. Complainant The Complainant asserts its rights in its CARVANA Mark. The Complainant firstly contends the Disputed Domain Name is confusingly similar to its CARVANA Mark because it is identical but for the addition of the words “auto” and “finance”. Because the Complainant is widely known as a provider of automobile financing services, the Complainant asserts that the additional terms “auto” and “finance” are descriptive of that service, and therefore do nothing to reduce the confusing similarity. Second, the Complainant contends the Respondent lacks any rights or legitimate interests in the Disputed Domain Name. To support this argument it states the Respondent is not authorized by the Complainant to use the Disputed Domain Name, and is not in any way associated with it. The Complainant says its trade and service marks are well known. The Complainant argues the Respondent is not commonly known as “Carvana” or any variation thereof. The Complainant asserts the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademarks and therefore serves as “bait” to attract customers to the Respondent’s sites. Further, the Complainant asserts the Respondent is not making a legitimate noncommercial use of the Disputed Domain Name. It says, to the contrary, the Respondent’s use of the Disputed Domain Name is purely commercial and is illegitimate. This is because the Complainant states the Respondent is using the Disputed Domain Name for the improper purpose of taking advantage of the Complainant’s goodwill to confuse, mislead, and divert customers. It says the Respondent is intentionally tarnishing and diluting the Complainant’s valuable and known trademark. To support this argument, the Complainant notes the CARVANA Mark is an invented English word, and as such, third parties would not legitimately choose this name unless seeking to create an impression of an association with the Complainant. Thirdly, the Complainant argues the Respondent has registered and is using the Disputed Domain Name in bad faith. It says because the Disputed Domain Name wholly incorporates the Complainant’s CARVANA Mark, the Disputed Domain Name is designed to take advantage of the reputation and goodwill of the Complainant for financial gain. The Complainant’s evidence is that the Respondent utilizes the Disputed Domain Name to divert Internet users away from the Complainant’s primary website at “www.carvana.com” and away from the Complainant’s authentic CARVANA branded services (including auto financing services), towards the Respondent’s website or third-party websites unrelated to the Complainant. The Complainant’s evidence is that the third-party websites include automobile dealership services directly competing with the Complainant and, suspicious websites that appear to be distributing malware or undesirable applications. The Complainant states the Respondent lacks a legitimate connection to the Disputed Domain Name and that this is a case of opportunistic bad faith. The Complainant asserts the Respondent is improperly reaping commercial profit through diverted sales. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding: (i) that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has provided evidence of its registrations in relation to the CARVANA Mark in the United States. Accordingly, it is the Panel’s view that the Complainant has clearly and sufficiently demonstrated its rights in the CARVANA Mark with a history of use going back to at least 2013. The Panel is satisfied that the Complainant is well known by its CARVANA Mark as an online automobile dealership and more recently for automobile financing services. The Panel finds that the Disputed Domain Name contains, as a dominant element, the CARVANA Mark combined with the terms “auto” and “finance”. The Panel considers these terms to be descriptive. The use of these terms therefore does not prevent a finding of confusing similarity (see section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel also notes that it is well-established that the addition of the generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purposes of comparisons under the first element. The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant’s CARVANA Mark. Therefore, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the Disputed Domain Name, among other circumstances, by showing any one of the following elements: (i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service rights; (iii) that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name lies with the Complainant. The Complainant has stated, and the Panel accepts, that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In this respect, the Panel accepts that the Respondent is not commonly known by the Disputed Domain Name and has not acquired any rights (registered or otherwise) in the CARVANA Mark or name. The Panel accepts the Respondent is not authorized by the Complainant to use the Disputed Domain Name, and is not in any way associated with it. The Panel finds the Respondent’s use of the Disputed Domain Name to redirect Internet traffic away from the Complainant’s website to competitors’ websites is not a noncommercial or fair use of the Disputed Domain Name. The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and accordingly finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondent and the absence of any claim to rights or legitimate interests in the Disputed Domain Name. Therefore, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. C. Registered and Used in Bad Faith The Panel is satisfied that the Disputed Domain Name has been registered in bad faith for the following reasons: (i) The Panel is satisfied that the Complainant’s CARVANA Mark is well-known in its industry with a history of use going back to 2013. The Panel is also satisfied that at the time of registering the Disputed Domain Name, the Respondent was aware of the Complainant, its CARVANA Mark, the Complainant’s exclusive rights in that Mark and the goodwill residing in the Mark. (ii) In this respect, the Panel notes that use of the terms “auto” and “finance” is linked to the Complainant’s services, suggesting that in choosing those words the Respondent was aware of the Complainant and its automobile financing services when it registered the Disputed Domain Name. (iii) The Complainant has stated and the Panel accepts that the CARVANA Mark is an invented English word, and as such, it is improbable the Respondent would independently come up with the name “Carvana” in connection with automobile finance, unless seeking to create an impression of an association with the Complainant. (See CVS Pharmacy, Inc. and MinuteClinic, LLC v. Transure Enterprise Ltd/Above.com Domain Privacy,WIPO Case No. D2015-0260 (Apr. 24, 2015). (iv) These factors, support a finding that the Respondent knew of the Complainant, the Complainant’s CARVANA Mark and the Complainant’s services at the time of the registration of the Disputed Domain Name. (v) Without any rights or legitimate interests, the Respondent’s registration of the Disputed Domain Name is indicative of bad faith. (vi) Given the Respondent’s lack of connection to the words “Carvana auto finance”, and given the obvious links between the text of the Disputed Domain Name and the Complainant’s automobile finance services branded with the CARVANA Mark, the Panel finds the Respondent registered the Disputed Domain Name in opportunistic bad faith (see LACER, S.A. v. Constanti Gomez Marzo,WIPO Case No. D2001-0177 (Mar. 29, 2001); see also ITAÚ UNIBANCO S.A. (formerly named Bano Itaú S.A.) v. Fabio Gomes,WIPO Case No. D2009-1456 (Dec. 28, 2009). The Panel is also satisfied that the Disputed Domain Name has been used in bad faith for the following reasons: (i) The Complainant has provided evidence which shows that the Disputed Domain Name automatically redirects the online user to third-party websites in competition with the Complainant, and to other suspicious websites appearing to distribute malware or undesirable applications. This is evidence of use in bad faith. (See for example LogMeIn, Inc. v. Nanci Nette,WIPO Case No. D2019-0007 (September 9, 2019) (finding bad faith when the respondent “has only used the disputed domain name to redirect web users to either third party websites that offer products or services unrelated to Complainant, or to Complainant’s website after circulating through various URLs”); Ruby Life Inc. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2019-1456 (July 28, 2019) (finding bad faith when the respondent’s use of the Domain Name “is to automatically redirect online users to third-party websites,” and more so “where a respondent uses the domain name to redirect users to what appears to be a fraudulent website,” such as “through downloading malware (by downloading a file or permitting the website to carry out a function)”); CenturyLink Intellectual Property LLC v. Above.com Domain Privacy / Protection Domain,WIPO Case No. D2017-0144 (March 17, 2017) (“concluding that the Respondent acted in bad faith by attempting to trade on the goodwill and reputation of the Complainant’s trademark by operating websites that redirect visitors to competitor websites or to websites distributing malicious code”). (ii) By using the Disputed Domain Name to divert Internet users away from the Complainant’s website towards the Respondent’s website or third-party websites in competition with the Complainant, the Panel finds the Respondent is likely to be improperly reaping commercial profit through diverted sales, and is likely to derive a benefit from the suspicious malware offerings. (iii) The Panel is entitled to have regard to the lack of response from the Respondent. (iv) The Panel therefore concludes that the Respondent, by using the Disputed Domain Name, has intentionally attempted to divert for commercial or malicious gain, Internet users to its website or third-party websites, by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website. This is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv). Therefore, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name Andrew Brown Q.C.
(U.S. Registration No. 4,328,785)
registered April 30, 2013, for “online dealership services featuring automobiles” in International Class 35, and “online financing services in the field of automobile loans” in International Class 36.
2. CARVANACARE
(U.S. Registration No. 4,971,997)
Registered June 7, 2016, for “extended warranty services, namely service contracts; Providing extended warranties on automobiles,” in International Class 36.
(U.S. Registration No. 5,022,315)
Registered August 16, 2016, for “shipping, pickup, and delivery services for automobiles,” in International Class 39.
(U.S. Registration No. 6,037,292)
Registered April 21, 2020, for “online dealership services featuring automobiles,” in International Class 35, “online financing services in the field of automobile loans; extended warranty services, namely, service contracts; providing extended warranties on automobiles,” in International Class 36, and “shipping, pickup, and delivery services for automobiles” in International Class 39.
Sole Panelist
Date: August 26, 2020
Full & Egal Universal Law Academy